IP Clinic Helps Move UA Inventors Closer to Market

The next big invention that comes out of the University of Arizona may have the College of Law on its side.
 
When the university was selected as a National Science Foundation Innovation Corps (I-Corps) site earlier this year, it meant that Wildcat scientists and engineers gained a new opportunity to apply for funding to help commercialize their research. And thanks to the involvement of the College of Law’s Quarles & Brady Intellectual Property & Entrepreneurship Clinic, those scientists and engineers will have some expert help protecting their inventions.
 
The I-Corps designation, given to, Tech Launch Arizona (TLA) – the office of the university that commercializes inventions stemming from research – provides $100,000 each year for the next three years for TLA distribute to selected teams to help them move their intellectual property toward market readiness.
 
One of the biggest hurdles to successfully commercializing research and technology? Patents.
 
“Your odds at getting a patent may be good, but your odds at getting a patent that’s actually useful are much lower,” says clinic director and professor of practice Allan Sternstein.
 
That’s where Sternstein and his team of eight law students who staff the IP Clinic step in.
 
They’ll work with I-Corps applicants whose intellectual property is not owned by the university: students, postdoctoral researchers, staff and faculty who have developed an invention outside their UA employment. The first step will be to determine whether their invention is patentable and if they have demonstrated reduction to practice, meaning they’ve shown that the invention works for its intended purpose. Then, if these items are met, the clinic may draft and file patent applications.
 
That’s a critical step that is easy to do incorrectly, says Sternstein, who has 35 years of experience as an intellectual property attorney.
 
“I’ve worked with people who have made comments in their patent application process that eliminated total areas of their invention that they could have claimed later,” he explains. “By saying the wrong thing, they took it off the table. Or the language they use leaves the door open for competitors.”
 
Sternstein says their work with I-Corps applicants is a perfect example of the clinic’s two goals: providing a critical legal service to community members who might not otherwise have access to it, and educating law students.
 
The inaugural NSF I-Corps teams will be selected April 11. Visit Tech Launch Arizona’s website to learn more.